Posts Tagged ‘Trademark’

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Things happen. Especially when monolithic bureaucracies come into play. Allow me a brief aside. Two years ago, when I last went on a true vacation, I passed through a TSA checkpoint. I was wearing flip flops so it would be easy to take off my shoes as I passed through the screening area (always thinking ahead). I deposited my carry-on bag and other stuff, walked through the gamma ray machine, got felt up by a portly gentleman (who looked about as enthused about feeling as I was about being felt), and was about to take my flip flops and go alone my merry way. Then something happened. The TSA agent was really getting into checking out my flip flops. He noticed a flap in the heel area which opened up and revealed a small compartment, inside of which was a miniature pen. Figurative alarms went off on this guy’s face. Needless to say, my wife and I were detained. I explained that my dad bought me the sandals for a birthday present and thought it was a really clever gimmick (it is!) so that if you needed a pen while taking a stroll on the beach, you were Johnny-on-the-spot. Truth be told, I think it’s fairly obvious that the sandals are designed stash items other than pens (in fact, the name says it all: Reef Stash Sandals”, sold here). They called in a supervisor, I explained the situation and apologized gratuitously, and after a while I made it through, lesson learned.

The point is, sometimes its easier to beg permission than ask forgiveness. If you have a registered trademark, and there is any chance your mark could be infringing on other imports, you recording your mark with U.S. Customs pursuant to 19 C.F.R. Part 133, Subpart A.  Section 42 of the Lanham Act [15 U.S.C. Section 1124] and Section 526 of the Tariff Act prohibit the importation of goods which “copy or simulate” registered trademarks owned by U.S. citizens or corporations. Customs officers monitor imports to prevent the importation of goods bearing infringing marks, and can access the recordation database at each of the 317 ports of entry.

The benefit is that Customs enters the mark into its system and your mark is entered into a product specific database used to block illegal imports.  If you suspect your product is being infringed upon, you can and should provide Customs with  information regarding the counterfeit or gray market import, and request ongoing trade advisories for your product.  This allows you to use Customs to enforce your mark preemptively, and is quite cost-effective, especially compared with litigation. Bear in mind, Customs will not exclude infringing goods in cases where the United States and foreign trademarks are owned by the same person, or by related corporations or parties subject to “common ownership or control” pursuant to 19 C.F.R. Sections 133.21(c)(1),(2). Remember that there are far too many marks and too many goods for Customs to monitor without your help, so don’t get complacent.

Still, Customs, like other executive agencies, is not obligated to follow every lead, and may exercise its own judgment relative to enforcement measures, though some courts have found that trademark holders may obtain an injunction requiring Customs to enforce suspected infringement. Regardless, trademark holders retain their full arsenal of civil rights and remedies.

Aaron Thalwitzer is an attorney practicing civil litigation and intellectual property law with Zies Widerman & Malek in Melbourne, Brevard County, Florida.


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I enjoy a fine bottle of liquor. Not so much for elixir within, but because such care and artistry is involved with the presentation of the bottle, labels, and even the seal around the cap. I have dozens of bottles of liquor at home, but rarely enjoy more than a drink per week. I just enjoy looking at them, having them around, possessing them.

In a recent case out of the 6th U.S. Circuit Court of Appeals, the court held that Maker’s Mark bourbon can enforce its trademark on the red dripping wax seal on its bottles and Jose Cuervo (and others) may not. The Court’s colorful opinion begins by quoting and acknowledging the wisdom of the writing of Justice Hugo Black, who wrote “I was brought up to believe that Scotch whisky would need a tax preference to survive in competition with Kentucky bourbon.” Dep’t of Revenue v. James B. Beam Distilling Co., 377 U.S. 341, 348-49 (1964) (Black, J., dissenting).

Anyone who has seen a bottle of Maker’s Mark knows the temptation. You just want to touch that shiny, rubbery, and oh-so-red wax with its I-don’t-give-a-damn drips around the neck of the bottle.

The Court, acknowledging bourbon’s “unique place in American culture and commerce,” affirmed Maker’s Mark’s mark, holding that Maker’s Mark has an “extremely strong” trademark deserving protection. This isn’t the first time Kentucky bourbon has beaten tequila in court. Jim Beam beat Cuervo last year as well. Justice served.

Cuervo used the dripping red wax on its tequila from 1997 to 2003, when they were enjoined by Maker’s Mark. Cuervo counter sued to invalidate Maker’s marks and lost. The recent decision affirmed the District Court’s holding.

The dispute provides a corollary into common issues in trademark cases, whether something claimed as a mark is (here, a wax seal) is “functional” in its application — which would invalidate the trademark; and whether the using the mark on two different products would be confusing to customers (here, whether tequila bottles would be confused for bourbon bottles).

Without question, the wax seal has a practical role, but there are many way to seal a bottle of bourbon. Here, the primary consideration of the wax seal is aesthetic. Furthermore, it is truly what Maker’s Mark is known for, according to the Court, it is a “hallmark” of Maker’s Mark, and has been on the bottles since 1958 and has been a registered trademark since 1985.

The case is Maker’s Mark Distillery Inc v. Diageo North America Inc et al, , Nos. 10-5508, 10-5586, 10-5819. I recommend it, not least for the historical account of Bourbon Whiskey.

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By: Mark R. Malek

You may recall a while ago that I posted an article about how Facebook was suing Faceporn for trademark infringement. At the time that I wrote that article, Faceporn was taken down.  I believe that the Faceporn that was the subject of that article, however, was the .com version.

This case is about a Norwegian site called Faceporn.  To tell you the truth, I’m not even sure if they are the same site, but I’m sure they are peddling the same stuff.  I’ll give you three guesses about the content!  Be that as it may, according to this CNET article, the Court in California indicated that Facebook has no case against Faceporn because there was no evidence submitted that Faceporn has corrupted anyone in California with its product.  Really?

I suppose I am a bit surprised that Facebook was not successful this time.  As you know, Facebook is notorious for a little bit of over-enforcing its trademark rights.  For example, we know that Facebook as gone after all sorts of websites that use either “Face” or “Book” in anything that even remotely resembles social networking.  I remember them going after “Lamebook” which they settled (see this article) as well as “Shagbook” (see this article), the “Facebook Of Sex” (see this article) , “FriendFinder” (see this article) and, of course, my all time favorite, “Teachbook” (see this article).

I understand that there is a desire to protect the brand, but isn’t Facebook a victim of its own success?  Would anyone be trying to play off the name if it wasn’t successful?  Of course not.  I am a bit frustrated at the notion of companies thinking that they own words, but at the same time, I am somewhat surprised that the Judge in this case did not believe that there was any damage to the Facebook trademark.  It seems as though there was at least a potential claim for trademark dilution here.

This is the perfect example, however, of the ultimate litigation tactic – spend the opponent into the ground.  As we all know from the recent IPO, although it did not go as well as planned, Facebook still has a ton of money, and access to the resources to make anyone’s life a living hell.  Don’t kid yourself about the price of the stock being in the low $30’s after being initially offered at $38.  I think they are not going to have any trouble paying their attorney bills, and I think the attorneys on these cases are not going to have much trouble paying for college tuition for their kids.

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An Office Action is issued by an examiner for the United States Patent and Trademark Office (USPTO), rejecting an application to register a trademark. They typically include issues with “informalities”, like an inadequate sample to show use of the mark, insufficient information regarding the nature of the entity seeking the mark, or insufficient information for the examiner to determine what goods and/or services the applicant provides.

An Office Action could also provide an actual basis for rejection of the mark, usually because of likelihood of confusion with an existing registered mark and genericness or descriptiveness of the mark for which registration is sought.

You have six months to respond to an Office Action. If your problem is “informalities”, you may just have to correct the deficiencies and/or provide additional information. If the examiner takes issues with the mark itself, such as likelihood of confusion, genericness, or descriptiveness, you may have to provide facts and argument to overcome the rejection. If the examiner still doesn’t approve the mark, a Final Office Action (aka a filing refusal) will issue, which you may appeal to the Trademark Trial and Appeal Board.

Office Actions are formal legal proceedings with rules, procedures, and consequences, which must be observed and followed. If the PTO refuses or rejects your application, the U.S. Government will be represented by a trained trademark attorney whose entire job is trademarks, and lots of ‘em. It can take years to resolve an Office Action, but there may be options for resolving your issues registering your mark of which the Examiner may not be aware.

The primary issue with trademarks is the concept of “confusion”. The PTO is concerned with protecting consumers from being sold goods or services from someone they think is someone else. In other words, they want to make sure that your competitor isn’t tricking people into thinking that he’s selling your stuff.

Your response to an Office Action is a permanent and public record, and they can and will be used against you in a Court of law! It’s not that you shouldn’t say anything like in criminal court, but you may be “estopped” from claiming anything beyond the scope of your response. Accordingly, it may be best to avoid arguments that compare your mark to another mark and claim that your mark won’t cause confusion between the marks.

This is but a precis of a primer. For more information, see the Trademark Manual of Examining Procedure or contact a trademark attorney.

Aaron Thalwitzer is an attorney with Zies Widerman & Malek in Melbourne, Brevard County, Florida who practices civil litigation and intellectual property law.

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Relax.  It’s not that kind of post.

Today I am christening a new TacticalIP blog category:  Intellectual Asset Management (IAM).  To introduce some terminology used in the field, I thought I would share the story of my initiation to the world of IAM.

Long before I became a patent attorney, I was a software engineer and entrepreneur.  My five-employee company licensed property insurance rating software to agents across the State of Florida.  One day, I called my only competitor and pointed out that the Florida rating software market “wasn’t big enough for the both of us” (yes, it was an awkwardly John Wayne-esque conversation between two computer geeks).  I eventually agreed to sell my software line of business to the competitor company.

No tangible property changed hands in our sales transaction, as my little software company owned no buildings, vehicles, furniture, nor even our rapidly-depreciating computing hardware.  To support the sale, I collected an inventory of all the intellectual property my company was to formally hand over to the buyer.  For example, our copyrighted software code, training manuals, and website content all qualified as intellectual property.  Also, the trademarked software product name, logo, and slogans I conveyed to the buyer were all intellectual property.  Had my company owned and transferred any patent rights to insurance-related inventions, those patents certainly would have qualified as intellectual property.

Immediately after the deal to sell my rating business closed, the buyer unceremoniously pitched all of my company’s inventoried intellectual property directly into his trash can (figuratively, if not literally)!  Why?  Refer to the beginning of my story:  the buyer was a competitor!  That company already had its own insurance rating source code, training manuals, website content, product name, logos, slogans, etc.  So what exactly did that competitor really buy if not formal, government-registered intellectual property?  It turns out the only asset my company had that was of value to that competitor was … our customers!

While my company was operating, we followed the common industry practice of keeping our customer database confidential to complicate, if not prevent, pilfering of those customers by competitors.  Proprietary information used in the operation of a business and that is maintained confidential for competitive advantage is called trade secret.  My company’s customers were not its property (no company can “own” its customers).  Nonetheless, that trade secret list of customers was certainly an intellectual asset and, in the eyes of that competitor anyway, it was the only asset my company had that was of any value at all to his business.

Moral of the story:  Intellectual assets certainly include formal intellectual property rights (e.g., patent, trademark, copyright), but also may include a vast array of intangibles that nonetheless are of value to the asset holder or to some interested acquirer.  Intellectual Asset Management (IAM) is all about creating, managing and exploiting such intellectual assets to realize value for the owner.  What constitutes an intellectual asset often is limited only to the eye of the beholder.




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